Friday, April 27, 2007

Precedential No. 32: "LENS" Generic for Internet Sale of Contact Lenses, Says TTAB

Hardly blinking an eye, the Board affirmed a genericness refusal of the term "LENS" for "retail store services featuring contact eyewear products rendered via a global computer network." For the sake of completeness, the Board also considered and rejected Applicant's claim of acquired distinctiveness. In re, Inc., 83 USPQ2d 1444 (TTAB 2007) [precedential].

Applicant, Inc. argued that the term LENS is merely suggestive of its services (LOL - ed.), or if descriptive, that the term has acquired secondary meaning. Examining Attorney Kimberly Boulware Perry maintained that LENS is generic because it "identifies the goods featured in the retail services at issue." She relied on dictionary definitions of "lens," "contact lens," and "eyewear," and Internet website pages indicating that the term "lens(es)" is used to refer to contact lenses. The Board understandably agreed that "lens" is used as shorthand for "contact lens."

Turning to the two-part genericness inquiry, the Board first found the genus of services to be "retail Internet store services featuring contact lenses." The second question: does the relevant public understand the term LENS to refer to that category of services?

Citing several precedents, including In re Candy Bouquet Int'l, Inc., 73 USPQ2d 1883 (TTAB 2004) [CANDY BOUQUET generic for retail candy services], the Board again agreed with the Examining Attorney that because LENS is "a name for" contact lenses, and because such lenses comprise the subject matter of Applicant's services, the term LENS is "likewise a generic name for the retail Internet store services themselves."

Applicant pointed to its ownership of a registration for LENS for computer software for the electronic ordering of contact lenses, but the Board stayed focused on the matter at hand. For one thing, that registration was obviously for goods rather than for services, and for another, the Board is not bound by prior actions of an examining attorney on a different application. See In re Nett Designs Inc., 56 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Turning to the issue of acquired distinctiveness (assuming arguendo Applicant's mark to be merely descriptive rather than generic), the Board found Applicant's evidence insufficient. pointed to sales of more than $4 million in 2004, a customer list exceeding 130,000 customers, and advertising expenditures exceeding $1.4 million since 1998.

The Board found that this evidence suggests "a degree of business success" and demonstrates the popularity of Applicant's services, but it falls "far short" of establishing that LENS has source-identifying significance. The evidence does not show that the advertising and sales figures relate to the designation LENS rather than, for example, Applicant's name LENS.COM. Moreover, the record is devoid of direct evidence that relevant customers view LENS as a distinctive source indicator for the services. Given the highly descriptive nature of LENS, "a great deal more evidence (especially in form of direct evidence from customers)" would be required.

In sum, Applicant lost.

TTABlog note: I am now keeping a running list of TTAB precedential decisions for 2007 (with links). Look to the column on the right, under the clever heading "Precedential Decisions." You will also find a similar list for each of the last three years.

Text Copyright John L. Welch 2007.


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